In 2013, Research Corporation Technologies (RCT) filed a lawsuit against Mylan, Breckenridge, and Alembic (“the appellants”) for infringement of U.S. Reissue Pat. No. 38,551, which claims pharmaceutical compositions useful in the treatment of epilepsy. In 2015, a separate entity—Argentum—petitioned for IPR of the ’551 patent. Several days after the PTAB instituted review of the Argentum petition, all the appellants filed their own petitions along with motions to join Argentum.

The PTAB instituted the petitions and joined each proceeding with Argentum under § 315(c), even though the petitions on their own would have been time-barred by § 315(b). In the PTAB’s decision permitting joinder, the appellants agreed that they would be limited to an “understudy role” in the trial. Ultimately, the PTAB concluded that each challenged claim had not been shown to be unpatentable.

The appellants appealed the decision to the Federal Circuit but were not joined by Argentum. Although RCT did not challenge the PTAB’s joinder decision, it argued that the appellants did not have standing because “[they do] not fall within the zone of interests of 35 U.S.C. § 319.” Specifically, RCT argued that allowing the appellants to appeal “would constitute an end-run around the statutory time-limit for instituting IPR proceedings” because the appellants’ initial petitions would have been time-barred had they not been previously joined.

The court relied on statutory construction to find that any parties joined under § 315(c) may appeal pursuant to § 319. In support, the court found that § 315(c) provides discretion for the PTAB to join any person “as a party” to the proceeding and that § 319 provides that “any party to the inter partes review shall have the right to be a party to the appeal.” The court reasoned that finding otherwise would require reading the term “party” differently between § 315 and § 319. As a result, the court found that the appellants were within the zone of interests and were not barred from appellate review. Proceeding to the merits, the court affirmed the PTAB’s decision finding that the petitioner had not met its burden to show the claims of the ’551 patent were unpatentable.

Interestingly, the court also addressed the appellants’ request for remand during oral arguments in light of the SAS v. Iancu decision that issued after briefing was completed. Specifically, the appellants argued that the decision should be remanded to the PTAB to consider the non-instituted grounds. However, the court was unpersuaded and found that the appellants had waived their request by waiting “over 6 months after the SAS decision” and raising the argument for the first time during their rebuttal argument.

This decision is relevant to any clients engaged in, or expecting to be engaged in, proceedings at the PTAB. Even if a party would otherwise be time-barred from filing an IPR petition, any party joined by the PTAB under § 315(c) has the right to appeal the decision under § 319.

For more information on this decision, please contact Fitch Even partner Nicole L. Little, author of this alert.